WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Tennis Corporation of America, doing business as "Sportscare" v. Chamberlin Chiropractic Corporation

Case No. D2000-0331

 

1. The Parties

Complainant is Tennis Corporation of America, doing business as "Sportscare", 3611 North Kedzie Avenue, Chicago, IL , USA ("Sportscare"). Respondent is Chamberlin Chiropractic Corporation, 55 New Montgomery, San Francisco, CA,

USA ("Chamberlin").

 

2. The Domain Name and Registrar

The domain name in issue is "sportscare.com". The registrar is Network Solutions, Inc.

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the Center) received Sportscareís complaint by email on April 25, 2000 and in hard copy on April 28, 2000. The Center verified that the complaint satisfies the formal requirements of the ICANN Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Sportscare made the required payment to the Center. The formal date of the commencement of this administrative proceeding is May 10, 2000.

The complaint identifies Chamberlin Chiropractic Corp., a California company located at 55 New Montgomery, San Francisco, CA, USA, as the Respondent, and states that Respondent is believed to be owned by Troy V. Chamberlin, 61 Montgomery Street, San Francisco, CA, USA. An Administrative Contact for Respondent is:

Master Domain (MD765-ORG) domainmaster@DSLNETWORKS.com

On May 3, 2000, the Center transmitted via email to Network Solutions a request for register verification in connection with this case. On May 9, 2000, Networks Solutions transmitted via email to the Center Network Solutionsí Verification Response confirming that the registrant is Chamberlin and the administrative contact is Master Domain and the billing contact is Gary Schick.

On May 10, 2000, the Center transmitted to "domainmaster@DSLNETWORKS.com" and "Garys@DSLNETWORKS.com", among others, Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the response was due by June 1, 2000.

On the same day, the Center transmitted both facsimile copies and hard copies via air mail/courier service, of the forgoing documents to:

Chamberlin Chiropractic Corp.
55 Montgomery, Mezz
San Francisco, CA 94105
USA

Mark Schwartz, Esq.
99 Almaden Boulevard
Suite 100
San Jose, CA 95113
USA

Administrative Contact:

DSLnetworks
577 2nd Street, Suite 203
San Francisco, CA 94107
USA

Billing Contact:

Gary Schick
Strada Internet Services, Inc.
577 2nd Street, Suite 203
San Francisco, CA 94107
USA

On May 30, 2000, the Center gave Notification (via email) of Suspension of Administrative Proceedings for 30 days at the request of the parties through their counsel, to permit the parties to undertake settlement discussions. Subsequently the Center at the request of the parties extended this suspension until July 30, 2000, and again until August 31, 2000.

On August 14, 2000, the Center received an email from counsel for the Complainant indicating that the parties have been successful in resolving this dispute and that a stipulation would be forwarded.

On August 18, 2000, the Center received from the parties a "Stipulation for Entry of Judgment and Order of Transfer" consented to by Chamberlin Chiropractic Corporation, Respondent, signed by Troy V. Chamberlin the President, dated July 27, 2000 and by Tennis Corporation of America, Complainant, signed by Alan G. Schwartz, the Chairman and Chief Executive Officer, dated August 1, 2000 ("Stipulation"). This Stipulation specifically requested the appointment of an Administrative Panel. It is attached hereto and by this reference incorporated herein.

On August 31, 2000, the Center advised the parties via fax that Mr. David Wagoner had been appointed as the panelist in this proceeding and enclosed a copy of the panelistís Statement of Acceptance and Declaration of Impartiality and Independence.

On September 7, 2000, the Center received an email from counsel from Respondent confirming that a decision by the panelist is expected pursuant to the Stipulation.

 

4. Factual Background

The Complainant alleges that it has registered the Trademark SPORTSCARE, in the United States Patent and Trademark Office and elsewhere and that such registrations include the following:

UNITED STATES DATE GOODS OF SERVICES

REG NO.

1,677,913 03/03/92 Providing courses and seminars in

the field of sports, physical fitness,

and conditioning and consultation

services relating thereto.

1,685,714 05/05/92 Physical therapy services.

The Complainant alleges that said registrations are owned by Complainant and are now incontestable in accordance with the United States Trademark Laws, 15 U.S.C. para. 1065 and 11 15(b).

 

5. Partiesí Contentions; Stipulation

A. Complainant alleges in the Stipulation the following:

(1) Since long prior to Respondentís registration of "sportscare.com" as a domain name, Complainant has been engaged in the business of using, licensing and sublicensing the name and service mark SPORTSCARE for physical therapy, orthopedic and other medical services; using, licensing and sublicensing the name and service mark SPORTSCARE for courses, seminars, and programs in the area of sports, physical fitness and conditioning; and providing consultation services.

(2) Complainant has provided its aforesaid services under the trademark, service mark and trade name SPORTSCARE since at least as early as November of 1983.

(3) Since long prior to the acts of Respondent herein, Complainant has used the trademark, service mark and trade name SPORTSCARE throughout the United States and elsewhere in connection with its aforesaid services.

(4) SPORTSCARE has as a result of Complainantís use and registration, required secondary meaning and fame.

(5) Complainant contends that subsequent to the aforesaid acquisition of secondary meaning and fame of SPORTSCARE as a mark and name identifying Complainant, Respondent registered "sportscare.com" as a domain name.

(6) Complainant alleges that Respondentís use and registration of "sportscare.com" as a domain name creates a likelihood of confusion with Complainant and Complainantís SPORTSCARE trademark, service mark and trade name as to source, sponsorship, affiliation or endorsement of Respondentís web site.

(7) Respondent has been using the name "sportscare" since 1992.

B. Respondent denies each of the Complainantís claims and, without any admission of liability, agreed to the Stipulation and to the transfer of the domain name registration solely for the purpose of the settlement.

 

6. Decision

In view of the Stipulation signed by the parties, the Panel is required by Rule 17 of the Rules to terminate the Administrative Proceeding.

Based upon the Stipulation, the Panel requires that the registration of the domain name "sportscare.com" be transferred to Complainant.

 


 

David Wagoner
Presiding Panelist

Dated: September 14, 2000.